Ordinarily, the most crucial step in protecting a trademark is the registration of the mark. The question here is what then happens when we have an unregistered trademark, is the mark wholly unprotected and free to all manners of infringement?
For instance, what happens to a trademark that has been registered in China, U.S.A, Germany, South Africa and 10 other countries but is not registered in Nigeria or where a trademark has been used for more than 20 years in Nigeria but remains unregistered, will these sort of mark be prey to infringers with no right of remedy?
The answer to these is that there are instances in which an unregistered mark such as the ones in the scenarios mentioned can be protected in Nigeria.
PROTECTING UNREGISTED TRADEMARK IN NIGERIA – MYTH OR REALITY
Registration of a trademark in Nigeria is what gives the owner the exclusive right to use such mark to the exclusion of others. Where a trademark is duly registered the owner can bring an action for trademark infringement and the due enforcement of trademark rights but such trademark infringement action is not open to unregistered trademarks.
However, this does not exclude the owner of an unregistered mark from having any right to their trademark. While an unregistered mark cannot make any claim for trademark infringement (which is open only to registered marks), the owner can bring a claim under passing off (which is an action open to unregistered mark that have become notorious and has established goodwill).
Unlike with a registered mark, the protection under passing off is not as of right, there are certain conditions that an unregistered mark must fulfil to be protected from infringers through a passing off action.
Passing off is described as an unfair competition by misrepresentation or literally speaking “the cause of confusion or deception”. Generally, an action for Passing off arises where the deception is made in the course of trade, which could lead to confusion amongst customers. This applies to both ecommerce businesses and businesses with physical addresses. It can also be described as, misleading the public into believing falsely, that the brand being projected was the same as a well known brand is a wrong and is known as the tort of “passing off”.
Black’s Law Dictionary described Passing Off as, ‘the act or an instance of falsely representing one’s own product as that of another in an attempt to deceive potential buyers.’
Reverse passing off occurs when one party removes or obliterates the original trademark on a product, without permission, and sells the product either unbranded, or with the actor’s own mark. – J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 25:6, 25:8, at 25-10 & 25-12 (4th ed. 1996). A trademark is not necessarily in logo form on a product; the product itself can serve as a trademark if it identifies the source of the product.
Reverse Passing off is an expansion of the common law principle of Passing off. The first case to expand on other forms of unfair
competition was L’Aiglon Apparel, Inc. v. Lana Lobell, Inc. In that case, a defendant was held liable for using a photograph of a competitor’s higher quality dress in advertising its inferior, cheaper dress. Another successful claim of reverse passing off can be seen in the case of John Wright, Inc. V. Casper Corp. – In this case, the Defendant, Casper, deliberately copied the Plaintiff, John Wright’s certificate of authenticity. It was held that the Defendant was a non-innocent infringer and has sought to exploit the natural potential for confusion which is implicit in the penny bank market and was found guilty. The Plaintiff was entitled to reliefs both in damages and by way of an appropriately-framed injunction.
TYPES OF REVERSE PASSING OFF
There are two (2) types of Reverse passing off;
- Express Passing off: This occurs when the original trademark is removed or obliterated without permission, and the actor sells the product with her own mark.
- Implied Passing off: This occurs when the original trademark is removed without permission, and the actor sells the product in an unbranded state.
There is no Nigerian case on reverse passing off.
PASSING OFF ACTION – KEY TO PROTECTING UNREGISTERED TRADEMARK
Passing off is not commonly easy to succeed unlike trademark infringement. To prove passing off the trademark owner must prove the following against the infringers successfully:
- The owner must prove that the name, mark, sign which he claims ownership has become distinctive of his goods and is regarded by a substantial number of the public or persons involved in a trade in the relevant market as coming from a particular source. In simple terms, the owner must prove that the mark is so notoriously know and there is sufficient established goodwill so that people associate the mark with only his goods.
- That the infringers who are engaged in a common field have used a name, mark, sign so resembling to the owners that it is likely or calculated to deceive or cause confusion in the minds of the common customer; and
- That the use of the name, mark, sign is likely to cause or has caused injury, actual or probable to the goodwill of the owners business.
The key factors in succeeding in passing off are notoriety and distinctiveness. The mark which you seek to protect must not be generic/common place. There must be established goodwill such that the mark is distinct and the public associates it with only your products.
In the case of Niger Chemists Limited V. Nigerian Chemists, the Plaintiffs (well known as Niger Chemists) had carried on business as Chemists and had several branches in Onitsha and other Eastern parts of Nigeria. The second Defendants and his partners founded a firm carrying on exactly the same business in Onitsha under the name of ‘Nigeria Chemists’ and their only premises was on the same street as one of the Plaintiff’s business. Both Companies were registered under the Companies and Allied Matters Act (CAMA) in Nigeria.
The Plaintiff sued and the Court granted an Injunction against the Defendants on the ground that their use of the name ‘Nigeria Chemists’ was intended to deceive the members of the public into believing that there was a relationship between Nigeria Chemists and Niger Chemists.
I know of no authority and I can see no principle which withholds us from preventing injury to the plaintiff in his business as a trader by a confusion which will lead people to conclude that the defendants are really connected in some way with the Plaintiff or are carrying on a branch of the plaintiff’s business.Lord Cozens-Hardy MR – Ewing V. Buttercup Co. (1917)
WHAT CAN BE GAINED FROM A SUCCESSFUL PASSING OFF ACTION
Upon a successful action the owner can claim for the following;
- An injunction to stop the infringers from using the mark;
- Claim that the products with the infringing marks be destroyed;
- Damages for losses suffered;
- Account of profit for profit from the products with the infringing mark sold.
While an unregistered mark can be protected, the crucial point to note is that it is not easy to specifically prove notoriety and distinctiveness in the mind of the public. The existence or otherwise of such established notoriety and distinctiveness is a question decided by the court depending on the circumstances in each case, as there is no yardstick for the determination.
It is therefore always advisable and worthwhile to register your trademark once the chance arises. As was said in a famous case;
“A man may not sell his own goods under the pretense that they are the goods of another man.”N. R. Dongre Vs. Whirlpool Corporation 1996 SCR (5) SUPP 369
By Efemena Ighorimoto;